Ex Parte Carr et alDownload PDFPatent Trials and Appeals BoardJul 8, 201912894287 - (D) (P.T.A.B. Jul. 8, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/894,287 09/30/2010 107508 7590 07/10/2019 Kilpatrick Townsend & Stockton LLP/ Amazon, Inc Mailstop: IP Docketing 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Michael Carr UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 090204-0961863 (Rl08105) 5722 EXAMINER REFAI,SAMM ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 07/10/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipefiling@kilpatricktownsend.com A TI-Patents@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL CARR and BHA VNISH H. LATHIA Appeal2018-001540 Application 12/894,287 1 Technology Center 3600 Before ANTON W. PETTING, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Amazon Technologies, Inc. App. Br. 1. Appeal2018-001540 Application 12/894,287 STATEMENT OF THE CASE2 Michael Carr and Bhavnish H. Lathia (Appellants) seek review under 35 U.S.C. § 134 ofa final rejection of claims 1, 3, 7, 8, 24--27, 29, 39-43, 45, 48, 50, and 51, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). The Appellants invented a way of facilitating transactions based on geolocation and unique user identification. Specification para. 26. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A computer-implemented method under control of one or more computer systems configured with executable instructions, the method comprising: [1] receiving, from a mobile device, a request for one or more coupons that are relevant to a geolocation of the mobile device; [2] receiving location data of the mobile device to determine the geolocation of the mobile device, wherein the location data is received based at least in part on a location sensor associated with the mobile device; [3] accessing, from a database, a user profile of a user of the mobile device, wherein the user profile comprises a list of items of interest to the user, and wherein the list of items of interest comprises at least one of a wish list or a shopping cart; 2 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed June 26, 2017) and Reply Brief ("Reply Br.," filed November 27, 2017), and the Examiner's Answer ("Ans.," mailed October 2, 2017), and Final Action ("Final Act.," mailed February 3, 2017). 2 Appeal2018-001540 Application 12/894,287 [ 4] receiving a plurality of bids from a merchant device to send coupons to the mobile device, wherein the merchant device is associated with a merchant offering at least one item from the list of items of interest; [ 5] storing information about the bids and the coupons in the database, the information comprising respective time periods during which the coupons are valid; [6] determining a travel speed of the mobile device based at least in part on the location data of the mobile device; [7] selecting, based at least in part on the information stored in the database, a coupon corresponding to a bid of the plurality of bids and relevant to the geolocation of the mobile device, the coupon associated with a time period during which the coupon is valid, the coupon being selected from the coupons based at least in part on a determination that the travel speed of the mobile device allows the mobile device to arrive at a location of the merchant device within the time period during which the coupon is valid; [8] authenticating the user based at least in part on a handshake with an authentication module of the mobile device, the handshake based at least in part on a unique identifier of the user and on a history of interactions between the one or more computer systems and the mobile device; [9] sending the coupon to the mobile device and based at least in part on the user being authenticated, wherein the sending activates the mobile device to present the coupon at a predetermined distance from the location of the merchant device, the predetermined distance based at least in part on the travel speed of the mobile device; 3 Appeal2018-001540 Application 12/894,287 [10] updating the information stored in the database such that the coupon is expired based at least in part on a second determination that the mobile device has traveled away from the location of the merchant device by a distance that exceeds a distance threshold. Claims 1, 3, 7, 8, 24--27, 29, 39-43, 45, 48, 50, and 51 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1, 3, 7, 8, 24--27, 29, 39-43, 45, 48, 50, and 51 stand rejected under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure. ISSUES The issues of eligible subject matter tum primarily on whether the claims recite more than abstract conceptual advice of results desired. The issues of written description matter tum primarily on whether the Specification supports limitation 10 of claim 1. ANALYSIS Claims 1, 3, 7, 8, 24-27, 29, 39-43, 45, 48, 50, and 51 rejected under 35 US.C. § 101 as directed to a judicial exception without significantly more STEP 12 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. 3 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 4 Appeal2018-001540 Application 12/894,287 STEP 2 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, ... determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[ w ]hat else is there in the claims before us? To answer that question, ... consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. [The Court] described step two of this analysis as a search for an "'inventive concept"'-i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice Corp. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions ( a law of nature, a natural phenomenon, or an abstract idea). Then, if claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims "apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Revised Guidance at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements 5 Appeal2018-001540 Application 12/894,287 recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 1 recites receiving a request and location data, accessing a user profile, receiving and storing bid data, determining a travel speed, selecting coupon data, authenticating based on handshake data, sending coupon data, and updating coupon data. Accessing a profile is receiving data from the profile. Determining a speed, selecting a coupon, and authenticating based on handshake data are further data reception followed by generic analysis of the data. Thus, claim 1 recites receiving, storing, analyzing, transmitting, and updating data. None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts4, (2) certain methods of organizing human activity5, and (3) mental processes6. Among those certain methods 4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. 6 Appeal2018-001540 Application 12/894,287 of organizing human activity listed in the Revised Guidance are commercial or legal interactions. Like those concepts, claim 1 recites the concept of marketing promotion. Specifically, claim 1 recites operations that would ordinarily take place in advising one to send or mark as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data. The advice to send or mark as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data involves issuing promotional coupons, which is an economic act, and selecting coupons, which is an act ordinarily performed in the stream of commerce. For example, claim 1 recites "sending the coupon," which is an activity that would take place whenever one is issuing promotional coupons. Similarly, claim 1 recites "selecting ... a coupon" and "authenticating the user," which are also characteristics of marketing promotional campaigns. The Examiner determines the claims to be directed to selecting based at least in part on the information stored, a coupon corresponding to a bid of the plurality of bids and relevant to the geolocation. Final Act. 4. The preamble to claim 1 does not recite what it is to achieve, but the steps in claim 1 result in sending and updating coupon data absent any technological mechanism other than a conventional computer for doing so. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed. Cir. 2018). 6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). 7 Appeal2018-001540 Application 12/894,287 As to the specific limitations, limitations 1-5 recite generic receiving and storing of data. Limitations 7, 9, and 10 recite selecting data, sending data, and marking data, which are rudimentary generic computer operations. At best, these limitation recite criteria for which data the operations apply to, which is in tum generic data processing. Limitations 6 and 8 recite determining a speed and authenticating a user, but by advising one to apply generic functions to get to these results. Each of these limitations is broad enough to encompass simply reading data from some source outside the scope of the claim. The limitations thus recite advice for sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data. To advocate sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data is conceptual advice for results desired and not technological operations. The Specification at paragraph 26 describes the invention as relating to facilitating transactions based on geolocation and unique user identification. Thus, all this intrinsic evidence shows that claim 1 is directed to using coupons based on user and location to promote sales, i.e. marketing promotion. This is consistent with the Examiner's determination. This in tum is an example of fundamental economic practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people as a certain method of organizing human activity because marketing promotion is itself a fundamental economic practice, as evidenced by its history and pervasiveness; marketing promotion is itself the commercial interaction 8 Appeal2018-001540 Application 12/894,287 between organization and potential customers to persuade a customer to make a purchase; and marketing promotion is the creation of relationships and interactions between organization and potential customers to promote sales. The concept of marketing promotion by sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data is one idea for creating a coupon promotion. The steps recited in claim 1 are a part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising). Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, storing, analyzing, transmitting, and updating data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, storage, analysis, transmission, and update, and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). As such, claim 1 is directed to receiving, storing, 9 Appeal2018-001540 Application 12/894,287 analyzing, transmitting, and updating data, and not a technological implementation or application of that idea. From this we conclude that, at least to this degree, claim 1 is directed to marketing promotion by sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself, or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application. 7 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, "all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. "[ A Jpplication[ s ]" of such concepts " 'to a new and useful end,' " we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the " 'buildin[g] block[ s]' " of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted) (alterations in original). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, 7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). 10 Appeal2018-001540 Application 12/894,287 devoid of implementation details. Steps 1-5 are pure data gathering steps. Limitations describing the nature of the data do not alter this. Steps 9 and 10 are insignificant post solution activity, such as storing, transmitting, or displaying the results. Steps 6-8 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellants' claim 1 simply recites the concept of marketing promotion by sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and does not recite any particular implementation. Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The Specification spells out different generic equipment8 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of marketing promotion by sending or marking as expired selected coupon data based on an authenticated user and location data, the selection 8 The Specification describes a mobile phone, a personal digital assistant (PDA), a laptop computer, or a net book. Spec. para. 31. The Specification describes the server as a single computing device, among other forms. Id. at para. 44. 11 Appeal2018-001540 Application 12/894,287 based on user, location, and bid data under different scenarios. It does not describe any particular improvement in the manner a computer functions. Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply marketing promotion by sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. We conclude that claim 1 is directed to achieving the result of marketing promotion by advising one to send or mark as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of 12 Appeal2018-001540 Application 12/894,287 organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea " 'to a particular technological environment.' " Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[ t ]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice, 573 U.S. at 223-24 (citations omitted) (alterations in original). "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer." Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving, storing, analyzing, transmitting, and updating data 13 Appeal2018-001540 Application 12/894,287 amounts to electronic data query and retrieval----one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be achieved by any general purpose computer without special programming"). None of these activities are used in some unconventional manner nor do any produce some unexpected result. Appellants do not contend they invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP Am., 898 F.3d at 1168a. Considered as an ordered combination, the computer components of Appellants' claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception-storage-analysis- transmission-update is equally generic and conventional. See Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of 14 Appeal2018-001540 Application 12/894,287 processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 1 is representative. The other independent method claim 3 is substantially similar at least as regards this analysis. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. There are no structural claims. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the commercial and legal interaction of marketing promotion by advising one to sending or marking as expired selected coupon data based on an authenticated user and location data, the selection based on user, location, and bid data, without significantly more. 15 Appeal2018-001540 Application 12/894,287 APPELLANTS' ARGUMENTS As to Appellants' Appeal Brief arguments, we adopt the Examiner's determinations and analysis from Final Action 4--10 and Answer 4--11 and reach similar legal conclusions. We now tum to the Reply Brief. We are not persuaded by Appellants' argument that no prima facie case is made. Reply Br. 3--4. A prima facie case is presented supra. We are not persuaded by Appellants' argument that "the present application [is] related to securing and reducing frictions of geolocation- based interactions." Reply Br. 5. None of the claims recite or otherwise mention friction and security. At best, the claims recite authenticating a user, which is a generic computer operation, and the claims recite no technological implementation details. To the extent Appellants use the word "friction" as a metaphor for computer processing burden searching data, reducing such a burden by simply applying decision criteria to reduce the data domain as in the claims is generic data processing. The whole, now ancient, concept of indexing and searching based on data as scope criteria is premised on this and is itself the generic source of such "friction" reduction. Simply identifying a better set of data to use as criteria remains no more than data selection, and not technological implementation. We are not persuaded by Appellants' argument that the specification describes and the claims recite a concrete implementation to achieve a desired outcome, rather than merely claiming that desired outcome in a functional manner. As demonstrated in the Appeal Brief, the specification and the claims related to the technological process of secure, geolocation-based mobile interactions between a mobile device and a computing system, where the friction of these interactions is reduced. 16 Appeal2018-001540 Application 12/894,287 Reply Br. 6. As we determine supra, there are no technological implementation details recited in the claims. Appellants do not cite where the Specification might provide such details unrecited in the claims. Even if they did provide such citations, this would be to no avail as there are no such details in the claims. We are not persuaded by Appellants' argument that [ u ]nique user identification provides a thread that ties together information about a particular user (e.g., credit card data), a link between that user and a given mobile computing device, and the relationship that user wishes to have with a given merchant ( e.g., opt in to zero-click purchasing).[] In addition, "[g]iven the ability of the mobile device 104 to serve as a platform for zero-click purchases, there is a need to provide security in order to prevent unauthorized charges. The security module 214 addresses this need by limiting functionality of the mobile device 104 and initiating security events in appropriate circumstances. The security module 214 may process login information, such as passwords and/or biometric information to authenticate the user 102 and prevent other people from using the mobile device 104. The security module 214 may also analyze behavior such as purchasing patterns and/or movement patterns and infer that irregular behavior may indicate fraudulent or unauthorized activity and limit device functionality .... " Reply Br. 7. Unique user identification per se is no more than some arbitrary data string. The claims do not recite more than merely using such identification, and even then, only somehow "based on" such identification without further implementation details. Claim 1, Limitation 8. Appellants do not claim to have invented the very idea of a unique user identifier, which is a concept dating back at least as far as multi-user systems. Appellants' arguments regarding the security module are unpersuasive if only because 17 Appeal2018-001540 Application 12/894,287 the claims in this particular application do not recite and appear not to describe operation of a security module. We are not persuaded by Appellants' argument that [b ]y using user authentication, a location of a mobile device to derive the mobile device's geolocation and travel speed, and location data to automatically select a coupon, and by timing the presentation of the coupon on the mobile device and expiring the coupon given the location data, it becomes possible to reduce the friction and secure the interaction ( e.g., automating the transmission of a relevant coupon to a user, while making sure that the transmission is desired by the user and reaches the right user). Reply Br. 11. Appellants again argue that their particular selection of data to use as selection criteria improve processing by reducing the amount of data to process. And again, merely applying decision criteria to reduce the scope of data to be searched is generic data processing and not a technological implementation. This is demonstrable by simply showing that it translates to paper and pencil. Even prior to computer, reducing the amount of data that had to be considered, reduced the burden on the person using paper, pencil, and the mind to process the problem. Automation per se is not a technological implementation. At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic-computer functions. Both the prosecution history and the specification emphasize that the key distinguishing feature of the claims is the ability to automate or otherwise make more efficient traditional price-optimization methods. . . . But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (2015). 18 Appeal2018-001540 Application 12/894,287 We are not persuaded by Appellants' argument that "the claims are not merely focused on the collection and analysis of power-related data. Instead, the claims recite a particular inventive process for securing and reducing the friction of geolocation-based interactions between computing devices." Reply Br. 13. This repetition of an earlier argument is equally unpersuasive here. Appellants also attempt to analogize the claims to those involved in McRO, 837 F.3d 1299. Reply Br. 1 7-18. In McRO, the court held that, although the processes were previously performed by humans, "the traditional process and newly claimed method ... produced ... results in fundamentally different ways." FairWarning, 839 F.3d at 1094 ( differentiating the claims at issue from those in McRO). In McRO, "it [was] the incorporation of the claimed rules not the use of the computer, that improved the existing technological process," because the prior process performed by humans "was driven by subjective determinations rather than specific, limited mathematical rules." 837 F.3d at 1314 (internal quotation marks, citation, and alterations omitted). In contrast, the claims of the instant application merely implement an old practice of using decision criteria in making sales decisions in a new environment. Appellants have not argued that the claimed processes of selecting products apply rules of selection in a manner technologically different from those which humans used, albeit with less efficiency, before the invention was claimed. Merely pigeon holing the objects of decision making in tiers to aid decision making is both old and itself abstract. The claims in McRO were not directed to an abstract idea, but instead were directed to "a specific asserted improvement in computer animation, i.e., the automatic use of rules of a 19 Appeal2018-001540 Application 12/894,287 particular type." We explained that "the claimed improvement [was] allowing computers to produce 'accurate and realistic lip synchronization and facial expressions in animated characters' that previously could only be produced by human animators." The claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers. FairWarning, 839 F.3d at 1094 (citations omitted). Appellants appear to have anticipated this, and add that "[s]uch features are not a concept that is well-understood and that predates the Internet world." Reply Br. 1 7. But novelty is not at issue here. "A claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). We are not persuaded by Appellants' argument that guidance of the Federal Circuit compels a finding that the claims are not abstract because the claims are not a mere implementation of an old practice in a new environment. Although sending coupons is a well-understood practice, the claims do not merely recite sending coupons by using computers. Instead, the claims recite features that amount to a specific set of rules and that rely on specific technological capabilities for providing secure and reduced friction interactions between a mobile device and a computer system. Secure and reduced friction geolocation-based interactions are not an old practice. As explained herein above, this practice only became possible with the advancement in the mobile technology such that mobile devices became capable of providing location data, handshake-based user authentication, and real-time presentation of content. 20 Appeal2018-001540 Application 12/894,287 Reply Br. 18. This is not an argument regarding the advent of new technology, but instead the introduction of a new context for existing technology. To be sure, the '379 patent claims the wireless delivery of regional broadcast content only to cellphones. In that sense, the claims are not as broad as the abstract idea underlying them, which could apply to the delivery of out-of-region content to any electronic device. That restriction, however, does not alter the result. All that limitation does is to confine the abstract idea to a particular technological environment-in this case, cellular telephones. The Supreme Court and this court have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). We are not persuaded by Appellants' argument that the claims contain an inventive concept that is also found in the specific ordered combination of the limitations, similar to the Federal Circuit's findings in BASCOM (BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Reply Br. 19--20. Initially, we remind Appellants that BASCOM did not find claims eligible on the substance, but rather that the Appellees did not provide sufficient evidence to support a 12(b )( 6) motion to dismiss in which facts are presumed in the non-movant's favor. The key fact in BASCOM was the presence of a structural change in "installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server." BASCOM, 827 F.3d at 1350. The instant claims have no analogous structural benefit. 21 Appeal2018-001540 Application 12/894,287 Claims 1, 3, 7, 8, 24-27, 29, 39-43, 45, 48, 50, and 51 rejected under 35 US. C. § 112 (a) as lacking a supporting written description within the original disclosure The Examiner determines that claim 1 limitation 10 is unsupported. Final Act. 2-3. The other independent claim 3 has a similar limitation. Appellants respond that this limitation is supported by Specification paras. 54, 114, 115, 129, 150, and 152. App. Br. 6-7. The problem for Appellants is that their arguments use the word "can" and not "would," much less "are" to combine the paragraphs. This is a classic example of a failed obviousness case. And even obviousness of the claims based on the Specification is insufficient to show possession. The Specification must show possession, not obviousness, of the claimed subject matter. [The written description] test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F. 3d 1336, 1351 (Fed. Cir. 2010) (en bane). One shows that one is "in possession" of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, . . . , the specification must contain an equivalent description of the claimed subject matter. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). 22 Appeal2018-001540 Application 12/894,287 CONCLUSIONS OF LAW The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51 under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure is proper. DECISION The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 23 Copy with citationCopy as parenthetical citation